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IP Institutional Policy
“Ten Questions Method”
Santiago, October 21 – 24, 2013
Topics
Concept
Content - “Ten Questions”
Conclusions
Concept
The definition of the IP Institutional Policy in universities and R&D institutions is one of the starting points in developing a knowledge transfer infrastructure in the organization. It creates legal framework for IPR management in the institution; It is a base for needed organizational infrastructure – establishment of professional IPR management entity – such as TTO, TMU etc.;Addresses important issues for any efficient technology transfer system and processes – first of all – who owns IP generated in the university and what are the options for acquisition of IP rights.Provides bases for legal security and certainty in the process of IP commercialization
Identifying responsibilities (who takes the decision), Establishing procedures,Timelines, Defining IP commercialization options (assignment, licensing , start up – spin - off )Status of IP in each option.
Concept
Important tool for technology managers for communication withUniversity entities (faculties); Researchers and External Partners – important guideline and support backing regarding IP ownership issues, conflict of interest, fellowships etc;Community and society.
It should be in line with national relevant legislation – IP laws, IP strategies, innovation policies etc;Fully customized to specific needs;Transparent and broadly communicated;After certain period of time it may be evaluated and further adjusted to the changing environment.
Concept “Ten Questions”
There is no model that fits all !, Each institution has to develop its own legal and organizational technology transfer infrastructure, including its own rules on IPR management – in line with its overall mandate and strategy;External support is sometimes needed and welcomed – but it has to be your policy and your own work, otherwise implementation will be very difficult;Guidelines do help;The “Ten Key Questions” are identified as essential issues, key terms to be regulated in any IP policy in order for universities and R&D institutions to effectively manage their IP and technology; List of 10 questions can be used as a checklist in developing your own IP institutional policy, with the possibility of adding further information from other sources and calibrating with national policy and experience.
Question 1: Who owns the IP generated in the framework of university or research institution’s activities and resources?
Important issue for IP commercialization;Main subject of misunderstanding with industry partners;Researchers and other involved in the process has to have a very clear view on this issue from the beginning of any project – in particular in the context of collaboration agreements, consultancy, work for hire, some sponsor agreements etc. Institutional Ownership Systems Pre-emption rights: the first owner is the employed inventor but the institution is entitled to claim the invention Automatic Ownership of Employer: the first owner is automatically the employer Non-employed students: free inventors or treatment as employes if conditions are fillfuledGrant systems: rules of funding schemesUniversity policies: esp. for copyrights/software
Question 2: Who manages IP and technology transfer in universities and R&D institutions?
Who is managing IPR – University Management or Technology Transfer Office or external body?
Who is taking the final decision?
Who is providing a support to decision makers?
What is the role of the TTO? Responsibilities ?
Question 3: What is the role and mandate of the Technology Transfer Office (TTO)? What Services should the TTO provide?
Industrial Property Policy of the University of MariborThe Technology Transfer Office shall be authorized and responsible for all activities falling within UM's competence in accordance with these Rules, in particular:− receiving and sending out notifications, calling upon applicants to supplement thenotifications of inventions;− sending out certificates;− drawing up opinions;− serving declarations;− receiving and submitting requests;− filing applications;− sending out copies of applications and appendices;− formulating proposals;− other tasks arising from these Rules
Question 3: What is the role and mandate of the Technology Transfer Office (TTO)? What Services should the TTO provide?
Services of the TTO will be conditioned by the complexity of the mandate and role that TTO will be given by the leadership of the university;Industry-science links - a key dimension in innovation policy and innovation management;TTO should have a fundamental role in the process of translating the results of academic research into a form which can be used by industry and commerce;Principle of “Triple Helix” (Government – Academia – Industry);The Entrepreneurial University is a central concept to the Triple Helix with an interactive model of innovation – collaborative links with other innovation actors and partnerships; This ‘third academic mission’ - involvement in socio-economic development is the most challenging for the TTO – supporting university to change from a traditional source of human resources and knowledge to a new source of technology generation and transfer;Students – future professionals and potential entrepreneurs and firm funders;Educational academic programs for organizations, through incubation projects and new training modules at venues such as inter-disciplinary centers, science parks, academic spin-offs, incubators and venture capital firms;Therefore TTO activities should be coordinated and if possible integrated in the core mission of university – education and research.
Question 3: What is the role and mandate of the Technology Transfer Office (TTO)? What Services should the TTO provide?
Activities – dual nature – central IPR management role (monitoring exploitation activities) and transversal structure incorporated in the work of research laboratories to directly support scientists and make them accountable and motivated for IP commercialization;
Needs clear mandate to operate inside and outside of university (creation of start up company);
Considering creation and alignment of activities of “front” and “back” office;
Innovative approach to transfer of knowledge processes – “innovation driven joint research platforms” with other actors should replace classic sponsored or contractual research;
In managing partnerships – essential to have clear and transparent rules on IP ownership!!!
Question 3: What is the role and mandate of the Technology Transfer Office (TTO)? What Services should the TTO provide?
In managing relations with other innovation actors – critical TTO processes would be:
(1) contract negotiation and management,
(2) intellectual property management,
(3) business development and spin-off creation,
(4) assistance with project administration,
(5) financial management of contracts and licenses, and (6) management of all personnel issues related to the successful execution of contracts.
Question 4: What IP management procedures will be followed by the university or R&D institution?
Transparent procedure is one of the main elements in creating confidence and credibility among stakeholders;
Procedure – usually 4 steps – disclosure, evaluation, proposal for decision and final decision;
Who is responsible for each step and who is taking the final decision;
Timelines;
IP ownership options.
Question 5: What choices do universities and R&D institutions have for commercializing their research results?
Assignment ? Rare
IP Licensing
Start – up / Spin /Off
Question 6: How are revenues from research commercialization shared among faculty, university, government and other stakeholders?
In the absence of a specific regulation the most frequently rule is 30% - 30% - 30% (university, faculty, inventor);
Important – define the base for revenues sharing, and when different bases are applicable
Gross revenue
Profit
Question 7: Is private funding for defined research projects permitted?
Is private funding of research permitted?
Under which conditions?
IP rights
Question 8: How to afford the cost of protection and maintenance of IP?
Special University IP Related Funds – “Innovation Fund” Part of the TTO BudgetPercentage in the Benefit Sharing Schematic (envisage in the IP policy that for example 10% of revenues should always be invested in “IPR Fund”)External Funding
Government Funds and Grants ( usually available for special projects – not for regular TTO activity) Industry Partner ( as a part of a “licensing deal”, in particular in the case of international protection of IP that is subject matter of the contract )Venture Capitalist
Other Options
Question 9: How are conflicts of interest and commitment handled?
Do researchers have right for private consultancy with industry partners?
To which extend – How many hours per week? Amount of money?
Directly or through TTO?
Revenue sharing with University?
IP Rights
Question 10:How should universities and R&D institutions encourage and motivate scientists/
researchers?
Incentive policies
Rewords
Moral
Financial
Education
Support for research
Other – be creative, it is important part of customization of your policy!
Conclusions
Develop your own model of IP Institutional Policy !Involve in the process all stakeholders (including researchers) – it has to be their policy as well;Language and content should be “user friendly” and understandable also for those who are not lawyers;Communicate the text, make it publically available;It may be helpful to have models of the main technology transfer agreements – with the understanding that it should be used as a base – each situation has its own specificity;Monitor implementation, evaluate and improve.
